OPPOSITION Nо B 3 126 960

Universidad de Sevilla, San Fernando, 4, 41004 Sevilla, Spain (opponent), represented by Pons Patentes y Marcas Internacional, S.L., Glorieta de Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Zhejiang Yuanyi Household Group Co., Ltd., Rm 2406, Building 16, World Trade Centre (South Dist), Keqiao, Shaoxing, Zhejiang, People’s Republic of China (applicant), represented by IPSIDE, 6 Impasse Michel Labrousse, 31100 Toulouse, France (professional representative).

On 05/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 126 960 is upheld for all the contested goods.

2. European Union trade mark application No 18 229 824 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

On 29/07/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 229 824 (figurative mark). The opposition is based on Spanish trade mark registration No 2 657 437 ‘US’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 20: Furniture, mirrors, picture frames; products, not included in other classes of wood, cork, reed, reed, wicker, horn; bone, ivory, whale, shell, amber, mother of pearl, sea foam, substitutes for all these materials or plastic materials.

Class 24: Textiles and textile goods, not included in other classes; bed and table covers.

The contested goods are the following:

Class 20: Banqueting chairs; bathroom furniture; bedroom furniture; beds, bedding, mattresses, pillows and cushions; couches; dining chairs; fitted fabric furniture covers; foot stools; furniture; furniture for children; infant playpens (mats for -); latex mattresses; latex pillows; living room furniture; mattress toppers; pillows; seat cushions; sleeping mats; sofas; storage boxes [furniture].

Class 24: Bed sheets; cloth napkins; curtain fabrics; curtains; cushion covers; door curtains; household textile goods; interior decoration fabrics; knitted fabrics; lap blankets; mattress covers; polyester fabric; printers’ blankets of textile; shower curtains; sofa covers; tablecloths of textile; textile piece goods for making cushion covers; upholstery fabrics; window curtains; woven fabrics for furniture.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 20

Furniture is identically contained in both lists of goods.

The contested banqueting chairs; bathroom furniture; bedroom furniture; beds, couches; dining chairs; foot stools; furniture for children; living room furniture; sofas and storage boxes [furniture] are included in the broad category of the opponent’s furniture. Therefore, they are identical.

The contested cushions and seat cushions are cases filled with soft material used for sitting on or leaning against. Furniture includes pieces of furniture that you can sit on like chairs. Considering that these sets of goods can be used in combination to provide a comfortable seat, they can have the same purpose. Furthermore, given that some cushions are specifically conceived to be used in combination with a piece of furniture (e.g. chairs), they are complementary. Moreover, these goods share distribution channels and relevant public. Therefore, they are similar to the opponent’s furniture.

The contested infant playpens (mats for-) are similar to the opponent’s furniture. ‘A playpen is a small structure which is designed for a baby or young child to play safely in’ (information extracted from Collins Dictionary on 21/06/2021 at https://www.collinsdictionary.com/dictionary/english/playpen). The contested goods have the same distribution channels, target the same public and are usually produced by the same manufacturers.

The contested fitted fabric furniture covers are specially designed to cover the opponent’s furniture. Therefore, they are complementary, target the same public through the same distribution channels and could be produced by the same manufacturers. Therefore, they are similar.

The contested bedding, mattresses, pillows (listed twice); latex mattresses; latex pillows; mattress toppers; sleeping mats are similar to at least a low degree to the opponent’s furniture. Furniture includes beds, which are pieces of furniture that are designed for sleep or rest. A mattress is a large, rectangular pad for supporting a lying body that is designed to be used on a bed. Pillows are cloth cases stuffed with feathers, foam rubber or other materials, used to support the head in bed, especially during sleep. Mattress toppers add a layer of comfort to the mattresses and improve a user’s quality of sleep. Sleeping mats are used together with foldable beds or by small kids and babies for a nap out of home. These goods have the same purpose (i.e. to enhance the rest and sleep of the user), distribution channels and end users. Furthermore, beds need complements to fulfil their function, such as bedding, mattresses and pillows, which play a fundamental role in the sleeping experience and are complementary to the opponent’s goods.

Contested goods in Class 24

The contested curtain fabrics; interior decoration fabrics; knitted fabrics; polyester fabric; upholstery fabrics; woven fabrics for furniture are included in the broad category of the opponent’s textiles, not included in other classes. Therefore, they are identical.

The contested bed sheets; cloth napkins; curtains; cushion covers; door curtains; household textile goods; lap blankets; mattress covers; printers’ blankets of textile; shower curtains; sofa covers; tablecloths of textile; textile piece goods for making cushion covers and window curtains are included in, or overlap with, the broad category of the opponent’s textile goods, not included in other classes. Therefore, they are identical.

b) Relevant public – degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar to varying degrees are directed at the public at large as well as at business customers with specific professional knowledge or expertise.

The degree of attention is considered average.

c) The signs

US
Earlier trade mark	Contested sign

The relevant territory is Spain.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark ‘US’ is meaningless for the relevant public and is, therefore, distinctive.

The contested figurative sign displays the letter ‘S’, depicted inside the letter ‘U’. Both letters are depicted in a standard typeface. As such these letters and their combination have no meaning for the relevant goods and are, therefore, distinctive. It is possible that one part of the public will see the letter ‘U’ as a geometrical shape or a decorative element. In this case, the letter ‘U’ would be of reduced distinctiveness (if any), since it cannot serve as an identifier of a commercial origin. The remaining part of the public will perceive the sign as a combination of the letters ‘U’ and ‘S’ referring to ‘SU’ or ‘US’. Due to the larger size of the letter ‘U’, it is more likely that this letter will be perceived and pronounced first. Therefore, the Opposition Division deems it appropriate to first analyse the opposition from the perspective of this part of the public.

Visually, the comparison of two letters signs depends on their stylisation and, especially, on whether the letters are recognisable as such in the signs. Consequently, the overall visual impression of the signs may be different when two conflicting signs, albeit containing or consisting of the same combination of two letters, are stylised in a sufficiently different way, so that their different overall graphical depiction eclipses the common verbal element. In the present case, the letters in the contested sign are clearly visible from the perspective of the public under consideration. However, the signs differ in the letters’ arrangement. Therefore, the signs are visually similar to a below-average degree.

Aurally, the signs will be pronounced identically by the public under consideration.

Conceptually, neither of the signs has a meaning for the public under consideration. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the goods are partly identical and partly similar to varying degrees. The degree of attention is average. The signs are visually similar to a below-average degree, aurally identical and the conceptual aspect does not influence the assessment of the similarity of the signs. The distinctiveness of the earlier mark is normal.

Both signs consist of the two-letter combination ‘US’ and differ merely in the arrangement of the letters in the contested sign. Although the signs are short signs and the arrangement of the letters has an important impact on the visual impression of the contested sign, it does not render the letter combination illegible or distorted to such an extent as to distract the public’s attention from the fact that the signs comprise the same two-letter combination ‘US’.

The public under consideration will clearly see the letters ‘U’ and ‘S’ in the contested sign and pronounce them as ‘US’. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Moreover, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all the above, there is a likelihood of confusion, even for the goods found to be similar to a low degree, on the part of the public that will perceive the contested sign as a composition of the letters ‘U’ and ‘S’ and will pronounce them as ‘US’. Given that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 657 437. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Carlos MATEO PÉREZ

Inés GARCÍA LLEDÓ

Michele M. BENEDETTI-ALOISI

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.